On 10 November 2016, the Court of Justice of the European Union (CJEU) ruled that a trademark on the shape of the Rubik’s Cube—supposedly the world’s bestselling toy of all time—is invalid (Case C‑30/15 P). With its judgment, the Court, inter alia, annulled a 2009 decision of the European Union Intellectual Property Office (EUIPO) that initially confirmed registration of the cube as an EU trademark.
The Rubik’s Cube was invented in 1974 by Hungarian architect Ernő Rubik. It was originally named “Magic Cube.” In 1980, the toy was renamed Rubik’s Cube and launched internationally.
The Facts of the Case
In 1999, the company behind the Rubik’s Cube brand, Seven Towns Ltd., registered a “three-dimensional mark in the shape of a cube with surfaces having a grid structure” with the EUIPO. On 15 November 2006, German toy manufacturer Simba Toys GmbH & Co. KG filed an application for a declaration of invalidity of that mark. The company, inter alia, claimed that the cube’s rotating capability may be protected only by patent and not as a trademark. On 14 October 2008, the Opposition Division of the EUIPO rejected that application in its entirety. On 1 September 2009, the rejection was confirmed by the EUIPO Boards of Appeal (Case R 1526/2008-2).
On 6 November 2009, Simba Toys brought an action seeking annulment of the EUIPO decision before the EU General Court. In support of its action, the company, inter alia, argued that the shape of the Rubik’s Cube was necessary to obtain a technical result (rotation), which is grounds for invalidity of the three-dimensional mark (now codified in Article 3(1)(e)(ii) of the Trademark Directive (2008/95/EC)). On 25 November 2014, the EU General Court dismissed the action. The court held that the graphic representation of the mark, the grid structure on each surface of the cube, gave no indication as to the well-known rotating capability of the Rubik’s Cube. Therefore, Simba Toys’ reasoning was not based on the representation of the mark as filed but on an “invisible element” (Case T-450/09).
The CJEU’s Decision
On 25 May 2016, Advocate General Maciej Szpunar delivered an opinion that the grid structure of the cube did not constitute “a decorative and imaginative element” but performed a technical function (Case C‑30/15 P). The cube’s structure divided the movable elements of the puzzle so that they were rotatable. Beyond these functional characteristics, the mark in question contained “no arbitrary or decorative characteristics.”
In its judgment, the CJEU followed the advocate general’s opinion and held that the sign at issue consisted of the shape of actual goods and not of an abstract shape. The EU General Court should have taken the fact that the goods function as a three-dimensional puzzle into account when assessing the functionality of the essential characteristics of the sign. While it was indeed necessary to consider the graphic representation of the shape at issue, that analysis could not be made “without taking into consideration, where appropriate, the additional elements relating to the function of the actual goods at issue.”